USPTO Patents Application 09701705

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Addrtss: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria. Virgiiiia 223 1 3- 1 450
www.uspto.gov

APPLICATION NO.

HLING DATE

HRST NAMED INVENTOR

ATTORNEY DOCKET NO,

CONFIRMATION NO.

09/701,705

12/01/2000

7590 05/06/2005

ADRIAN J. LEE

WORKMAN, NYDEGGER & SEELEY
1000 EAGLE GATE TOWER
60 EAST SOUTH TEMPLE
SALT LAKE CITY, UT 84111

Yukihiko Okumura

3815/107

7195

EXAMINER

GHULAMALI, QUTBUDDIN

ART UNIT

PAPER NUMBER

2637

DATE MAILED: 05/06/2005

Please find below and/or attached an Office communication conceming this application or proceeding.

PTC 90C (Rev 10/03)

Office Action Summary

Application No.

09/701,705

Applicant(s)

OKUMURA ET AL

Examiner

Qutub Ghulamali

Art Unit

2637

Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 1 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1,1 36(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1 .704(b).

Status

I) 13 Responsive to communication(s) filed on 29 September 2004 .
2a)n This action is FINAL. 2b)|El This action is non-final.

3) 0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parfe Quayle, 1935 CD. 11, 453 O.G. 213.

Disposition of Claims

4) 13 Claim(s) 1-84 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) 0 Claim(s) is/are allowed.

6) D Claim(s) is/are rejected.

?)□ Claim(s) is/are objected to.

8) [3 Claim(s) 1-84 are subject to restriction and/or election requirement.

Application Papers

9) n The specification is objected to by the Examiner.

10)0 The drawing(s) filed on is/are: a)^ accepted or b)n objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).

II) 0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

12)n Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).
a)n All b)n Some * 0)0 None of:

1 .n Certified copies of the priority documents have been received.

2.D Certified copies of the priority documents have been received in Applicafion No. .

3.n Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
See the attached detailed Office acfion for a list of the certified copies not received.

Attachment(s)

1) □ Notice of References Cited (PT 0-892)

2) O Notice of Draftsperson's Patent Drawing Review (PTO-948)

3) D Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08)

Paper No(s)/Mail Date .

4) □ Interview Summary (PTO-413)

Paper No(s)/Mail Date. .

5) □ Notice of Informal Patent Application (PTO-152)

6) □ Other: .

U.S. Patent and Trademark Office

PTOL-326 (Rev. 1-04)

Office Action Summary

Part of Paper No./Mail Date 20050427

Application/Control Number: 09/701,705
Art Unit: 2637

Page 2

DETAILED ACTION

Election/Restrictions

1. Restriction to one of the following inventions is required under 35 U.S.C. 121:

L Claims 1-8, 18-23, 33-37, 47, 49, 51 and 53-84, drawn to Channel estimation and
demodulation apparatus, classified in class 375, subclass 147, 316.

11. Claims 9-17, 24-32, 38-46, 48, 50 and 52 drawn to Fading Frequency Decision
Device, classified in class 455, subclass 504+.
The inventions are distinct, each from the other because of the following reasons:

2. Inventions I and II are related as combination and subcombination. Inventions in this
relationship are distinct if it can be shown that (1) the combination as claimed does not require
the particulars of the subcombination as claimed for patentability, and (2) that the
subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant
case, the combination as claimed does not require the particulars of the subcombination as
claimed because other frequency fading (signal variation) techniques can be used. The
subcombination has separate utility such as frequency fading and decision making.

3. Because these inventions are distinct for the reasons given above and the search required
for Group I is not required for Group II, restriction for examination purposes as indicated is
proper.

4. A telephone call was made to Mr. Adrian J. Lee on 4/27/2005 to request an oral election
to the above restriction requirement, but did not result in an election being made.

Application/Control Number: 09/701,705

Page 3

Art Unit: 2637

Applicant is advised that the reply to this requirement to be complete must include an
election of the invention to be examined even though the requirement be traversed (37 CFR
1.143).

examiner should be directed to Qutub Ghulamali whose telephone number is (571) 272-3014.
The examiner can normally be reached on Monday-Friday from 8:00AM - 5:00PM.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Jay Patel can be reached on (571) 272-2988. The fax phone number for the
organization where this application or proceeding is assigned is 703-872-9306.

Information regarding the status of an application may be obtained from the Patent
Application Information Retrieval (PAIR) system. Status information for published applications
may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
applications is available through Private PAIR only. For more information about the PAIR
system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).

5.

Any inquiry concerning this communication or earlier communications from the

QG.

AU 2637
April 27, 2005.

JAY K. PATEL
SUPEW"^' PATENT EX '